As set forth in 35 U.S.C. § 154(b), Congress provided for the restoration of patent term lost when the U.S. Patent and Trademark Office (USPTO) fails to take certain actions to examine an application by specified deadlines. Among the delays identified by the statute is a guarantee of “at least one of the notifications under [35 U.S.C.] section 132 or a notice of allowance under section 151” being sent within 14 months of the application filing date. 35 U.S.C. § 154(b)(1)(A)(i). Section 132 further specifies that if the examiner identifies an objection or reason to reject a patent application, an office action must issue to inform the applicant of the alleged deficiency. A restriction requirement, where the examiner asserts that an application claims more than one patentably distinct invention, is a type of office action falling under the purview of § 132. Thus, the mailing of a restriction requirement within fourteen months can satisfy the USPTO’s statutory obligation of timely examination. In addition to the USPTO’s obligations, § 154(b) also provides for subtractions from patent term adjustment (PTA) when an applicant takes certain actions, including taking more than three months to respond to an office action. 

When an examiner issues an office action, he or she should fully explain the reasons and bases for the rejection. In some instances, the office action may be “so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). In Chester, the Federal Circuit held that a completely defective office action of this sort would not satisfy the requirements of § 132. Thus, the applicant would continue to accumulate PTA until a corrected office action issued.

In other circumstances, while the office action may not be completely uninformative, it still may leave large areas of uncertainty for the applicant.  This was the scenario addressed by the Federal Circuit in Pfizer v. Lee, No. 2015-1265 (Fed. Cir. Jan. 22, 2016).

In Pfizer, an examiner issued a restriction requirement more than fourteen months after a patent application was filed. The restriction requirement identified twenty-one separate inventive groups in the pending claims, but omitted any discussion of six dependent claims. Several days before the six-month deadline for responding to the restriction requirement, the applicant contacted the examiner and pointed out the deficiency in the office action. The examiner agreed to withdraw the restriction requirement and issued a new restriction requirement about three weeks later. When the application later issued as a patent, the USPTO awarded PTA for the examiner’s delay in issuing the first restriction requirement, but did not award any additional PTA for the time period between the mailing of the first restriction requirement and the subsequent corrected restriction requirement. The patentee sued, alleging that (1) the original restriction requirement was deficient because it did not discuss several dependent claims and therefore did not satisfy the notice requirement of § 132; and (2) the examiner acknowledged this deficiency by withdrawing the original restriction requirement. The district court disagreed, finding that the original restriction requirement was broadly informative and therefore sufficient to comply with the notification requirement of § 132. The patentee appealed to the Federal Circuit.

On appeal, the Federal Circuit affirmed the district court, noting that “the examiner’s detailed descriptions of the 21 distinct invention groups outlined in the examiner’s initial restriction requirement were clear, providing sufficient information to which the applicants could have responded.” Pfizer, slip op. at 10. According to the Federal Circuit, the patentee should have responded to the original restriction of the claims actually discussed by the examiner, and also the remaining six dependent claims that were not discussed, guided by “the fact that their respective independent claims were each included in the initial restriction requirement.” Id. Furthermore, requiring a response to the original restriction requirement without knowing the categorization for all the dependent claims would not, according to the Court, force the patentee to abandon its “safe harbor” rights under 35 U.S.C. § 121 to avoid double patenting and other rejections over claims withdrawn pursuant to a restriction requirement. Rather, the patentee’s rights would have been preserved because the existing restriction groups already covered all the independent claims, as evidenced by the fact that “the examiner did nothing in the revised restriction requirement to modify the nature or description of the 21 distinct ‘inventions’ already defined in the initial restriction requirement.” Id. at 14. And at any rate, the Court noted, the restriction was not made “final” for safe harbor purposes until the patentee had an opportunity to respond and assert which restriction groups should encompass the six omitted dependent claims. Id.

Dissenting from the majority opinion, Judge Newman pointed out that the decision meant the applicant

should have guessed as to which of the 21 groups the examiner would have chosen for each of the six claims that the examiner erroneously omitted from the requirement for restriction. On the premise that [the applicant] might have guessed correctly and that the examiner might have proceeded with the prosecution without correcting his error, my colleagues refuse to include the period of actual delay in the adjustment of the patent term.

Newman Dissent at 2 (footnote omitted).

Judge Newman also noted that it should not have been held against the applicant that the applicant found the error that persuaded the examiner to withdraw the original restriction requirement. The question of whether an office action complied with the requirements of § 132 “should not turn on who recognized the error.” Id. at 6.

Based on the Court’s opinion, the majority seemed uncomfortable with the apparent windfall PTA the applicant stood to gain by waiting until just before the six month response deadline to point out an error in the original restriction requirement.  Waiting until the six-month date to respond to an office action would have ordinarily incurred a three month subtraction from PTA for applicant delay.  Had the majority sided with the applicant, it would therefore effectively be awarding additional PTA for a time period that would otherwise have counted as an applicant delay in responding to the original restriction requirement, even though the original office action was mostly comprehensible.  Thus, a lesson to take from the Pfizer decision is that applicants should review office actions carefully and bring any potential errors or ambiguity to the examiner’s attention at an early time point.  Applicants should not assume that a withdrawn or reissued office action will automatically allow for continued accrual of PTA, particularly where the applicant requested a new office action long after the mail date of the original office action.